Status of Director Review requests

Director Review requests are uploaded into the corresponding case as Exhibit 3100 and are available on the Patent Trial and Appeal Case Tracking System (P-TACTS) for processing America Invents Act (AIA) reviews typically within a week of the receipt of the request. Director Review requests are also compiled in the spreadsheet below. The spreadsheet includes the date the Director Review request was received or sua sponte was granted, the case number of the proceeding, the requesting party, the involved parties, the status of the request, and the date of the most recent status. This spreadsheet will be updated monthly.

Director Review requests spreadsheet (July 15, 2024)

Director Review granted – proceedings

Below are the proceedings in which Director Review has been granted, either based on a party's request or sua sponte. Director Review decisions are, by default, routine decisions as set forth in Standard Operating Procedure 2 (SOP 2), unless otherwise indicated.

Recent decisions

Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd., IPR2024-00222 (see Adverse judgement)

Decision vacating adverse judgment, and remanding for further proceedings – Paper 7 (Vidal July 10, 2024)

Prime Time Toys LLC v. Spin Master, Inc., IPR2023-01339, IPR2023-01348, IPR2023-01461 (see Obviousness; Rationales and Secondary considerations)

Decision reversing decision denying institution, and remanding for further proceedings – Paper 12 (Vidal July 9, 2024)

Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218 (see Institution; Multiple petitions)

Decision vacating decision on institution and remanding for further proceedings – Paper 12 (Vidal April 19, 2024)

MAHLE Behr Charleston Inc. v. Frank Amidio Catalano, IPR2023-00861 (see Expert testimony)

Decision vacating decision on institution and remanding for further proceedings – Paper 15 (Vidal April 5, 2024)

Recently granted

Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860

Order granting Director Review – Paper 126 (Vidal June 12, 2023)
Order authorizing party briefing and amicus briefing, setting schedule, and granting motions for withdrawal and substitution of counsel and pro hac vice admission - Paper 133 (Vidal October 27, 2023)

Abuse of process and/or sanctions - 37 C.F.R. § 42.12

OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064

Order authorizing party briefing and amicus briefing, and setting schedule – Paper 47 (Vidal July 7, 2022), Paper 51 (Vidal July 21, 2022)
Decision determining abuse of process, issuing sanctions, and remanding for further proceedings – Paper 102 (Vidal October 4, 2022) (precedential)
Decision denying rehearing, affirming decision on remand, dismissing Petitioner, ordering Patent Owner to show cause, and lifting stay – Paper 121 (Vidal December 22, 2022)
Order restoring OpenSky as a party, awarding reasonable fees as sanctions, and authorizing a motion for fees – Paper 127 (Vidal February 3, 2023)
Order admonishing Patent Owner and granting Petitioner’s motion to seal – Paper 138 (Vidal June 27, 2023)
Order granting motion for fees – Paper 147 (public version of confidential Paper 141) (Vidal January 22, 2024)
Decision granting-in-part Petitioner’s request on rehearing of order granting motion for fees – Paper 149 (Vidal March 11, 2024)

Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229

Order authorizing party briefing and amicus briefing, and setting schedule – Paper 35 (Vidal July 7, 2022), Paper 37 (Vidal July 21, 2022)
Decision determining abuse of process, issuing sanctions, and lifting stay – Paper 102 (Vidal December 22, 2022) (precedential)
Decision determining failure to comply with mandatory discovery, misrepresentation of fact and misleading argument, and ordering Petitioner to show cause – Paper 131 (Vidal August 3, 2023)
Order issuing sanctions – Paper 143 (Vidal December 13, 2023)

Adverse judgment - 37 C.F.R. § 42.73(b)

Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd., IPR2024-00222

Decision vacating adverse judgment, and remanding for further proceedings – Paper 7 (Vidal July 10, 2024)

Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, IPR2021-01125, IPR2021-01126 & IPR2021-01129

Decision ordering rehearing, vacating adverse judgment, and remanding for further proceedings – Paper 14 (Vidal December 21, 2022) (precedential)

Anticipation - 35 U.S.C. § 102

Inherency

Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc., PGR2021-00088 & PGR2022-00025

Decision vacating decision denying institution and remanding for further proceedings – PGR2022-00025, Paper 15 (Vidal August 4, 2023)
Decision vacating decision denying institution and remanding for further proceedings – PGR2021-00088 Paper 16 (Vidal August 4, 2023)

Applicant admitted prior art

MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics AG, IPR2020-01016 & IPR2021-00044

Decision granting rehearing, vacating the Final Written Decision, and remanding for further proceedings – Paper 44 (Vidal August 22, 2022)

SolarEdge Technologies Ltd. v. SMA Solar Technology AG, IPR2020-00021

Decision granting Director Review and modifying-in-part decision granting rehearing of Final Written Decision – Paper 34 (Vidal June 8, 2023)

Bar due to patent owner’s action - 35 U.S.C. § 315(b)

Samsung Electronics Co., Ltd. v. Netlist, Inc., IPR2022-00615

Decision denying rehearing and remanding for further proceedings – Paper 40 (Vidal February 3, 2023)

Unified Patents, LLC, v. MemoryWeb, LLC, IPR2021-01413

Decision granting Director Review, vacating-in-part Final Written Decision, and vacating Board order – Paper 76 (public version of confidential Paper 74) (Vidal May 22, 2023)

Claim construction

ASSA ABLOY AB v. CPC Patent Technologies Pty, Ltd.,IPR2022-01006, IPR2022-01045 & IPR2022-01089

Decision vacating Final Written Decision and remanding for further proceedings – Paper 49 (Vidal March 15, 2024)

Apple Inc. v. Personalized Media Communications, LLC, IPR2016-00754 & IPR2016-01520

Order granting Director Review, vacating Final Written Decision, and remanding for further proceedings – Paper 50 (Hirshfeld March 3, 2022)

Delegated Rehearing Panel (DRP)

DK Crown Holdings Inc. v. Diogenes Limited, IPR2023-00268

Order delegating Director Review to a Delegated Rehearing Panel – Paper 11 (Vidal November 7, 2023)
Delegated Rehearing Panel Decision granting DRP Review, vacating decision denying institution, and remanding for further proceedings – Paper 14 (DRP February 21, 2024)

SynAffix B.V. v. Hangzhou DAC Biotech Co., Ltd., IPR2022-01531

Order delegating Director Review to a Delegated Rehearing Panel – Paper 19 (Vidal November 16, 2023)
Delegated Rehearing Panel Decision granting rehearing, vacating decision denying institution, and remanding for further proceedings – Paper 23 (DRP March 4, 2024)

Duty of candor - 37 C.F.R. § 42.11

OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064

Order authorizing party briefing and amicus briefing, and setting schedule – Paper 47 (Vidal July 7, 2022), Paper 51 (Vidal July 21, 2022)
Decision determining abuse of process, issuing sanctions, and remanding for further proceedings – Paper 102 (Vidal October 4, 2022) (precedential)
Decision denying rehearing, affirming decision on remand, dismissing Petitioner, ordering Patent Owner to show cause, and lifting stay – Paper 121 (Vidal December 22, 2022)
Order restoring OpenSky as a party, awarding reasonable fees as sanctions, and authorizing a motion for fees – Paper 127 (Vidal February 3, 2023)
Order admonishing Patent Owner and granting Petitioner’s motion to seal – Paper 138 (Vidal June 27, 2023)
Order granting motion for fees – Paper 147 (public version of confidential Paper 141) (Vidal January 22, 2024)
Decision granting-in-part Petitioner’s request on rehearing of order granting motion for fees – Paper 149 (Vidal March 11, 2024)

Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229

Order authorizing party briefing and amicus briefing, and setting schedule – Paper 35 (Vidal July 7, 2022), Paper 37 (Vidal July 21, 2022)
Decision determining abuse of process, issuing sanctions, and lifting stay – Paper 102 (Vidal December 22, 2022) (precedential)
Decision determining failure to comply with mandatory discovery, misrepresentation of fact and misleading argument, and ordering Petitioner to show cause – Paper 131 (Vidal August 3, 2023)
Order issuing sanctions – Paper 143 (Vidal December 13, 2023)

Expert testimony

MAHLE Behr Charleston Inc. v. Frank Amidio Catalano, IPR2023-00861

Decision vacating decision on institution and remanding for further proceedings – Paper 15 (Vidal April 5, 2024)

Xerox Corp. v. Bytemark, Inc., IPR2022-00624

Decision granting Director Review and affirming decision denying institution – Paper 12 (Vidal February 10, 2023)

Institution - 35 U.S.C. § 314(a)

Parallel proceedings

OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064

Order authorizing party briefing and amicus briefing, and setting schedule – Paper 47 (Vidal July 7, 2022), Paper 51 (Vidal July 21, 2022)
Decision determining abuse of process, issuing sanctions, and remanding for further proceedings – Paper 102 (Vidal October 4, 2022) (precedential)
Decision denying rehearing, affirming decision on remand, dismissing Petitioner, ordering Patent Owner to show cause, and lifting stay – Paper 121 (Vidal December 22, 2022)
Order restoring OpenSky as a party, awarding reasonable fees as sanctions, and authorizing a motion for fees – Paper 127 (Vidal February 3, 2023)
Order admonishing Patent Owner and granting Petitioner’s motion to seal – Paper 138 (Vidal June 27, 2023)
Order granting motion for fees – Paper 147 (public version of confidential Paper 141) (Vidal January 22, 2024)
Decision granting-in-part Petitioner’s request on rehearing of order granting motion for fees – Paper 149 (Vidal March 11, 2024)

ResMed Corp. v. Cleveland Medical Devices Inc., IPR2023-00565

Decision granting Director Review, vacating decision denying institution, and remanding for further proceedings – Paper 15 (Vidal November 16, 2023)

AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530

Decision vacating decision denying institution and remanding for further proceedings – Paper 14 (Vidal March 2, 2023)

CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022-01242

Decision ordering rehearing, vacating decision on institution, and remanding for further proceedings – Paper 23 (Vidal February 27, 2023) (precedential)

NXP USA, Inc. v. Impinj, Inc., IPR2021-01556

Decision granting Director Review and affirming decision denying rehearing – Paper 13 (Vidal September 7, 2022) (precedential)

Vector Flow, Inc. v. HID Global Corporation, IPR2023-00353

Decision granting Director Review, vacating decision denying institution, and remanding for further proceedings – Paper 11 (Vidal August 10, 2023)

Volvo Penta of the Americas, LLC, v. Brunswick Corporation, IPR2022-01366, IPR2022-01367, IPR2022-01368, IPR2022-01369 & IPR2022-01424

Decision granting Director Review, vacating decision denying institution, and remanding for further proceedings – Paper 15 (Vidal May 2, 2023)

Multiple petitions

Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218

Decision vacating decision on institution and remanding for further proceedings – Paper 12 (Vidal April 19, 2024)

Ford Motor Company v. Neo Wireless LLC, IPR2023-00763

Decision vacating decision on institution and remanding for further proceedings – Paper 28 (Vidal March 22, 2024)

American Honda Motor Co., Inc. v. Neo Wireless LLC, IPR2023-00797

Decision vacating decision on institution and remanding for further proceedings – Paper 27 (Vidal March 22, 2024)

General Motors LLC and Nissan North America, Inc. v. Neo Wireless LLC, IPR2023-00962

Decision vacating decision on institution and remanding for further proceedings – Paper 16 (Vidal March 22, 2024)

Code200, UAB v. Bright Data Ltd., IPR2022-00861 & IPR2022-00862

Decision ordering rehearing, vacating decision denying institution, and remanding for further proceedings – Paper 18 (Vidal Aug. 23, 2022) (precedential)

Inter partes review scope - 35 U.S.C. § 311(b)

Volvo Penta of the Americas, LLC, v. Brunswick Corporation, IPR2022-01366, IPR2022-01367, IPR2022-01368, IPR2022-01369 & IPR2022-01424

Decision granting Director Review, vacating decision denying institution, and remanding for further proceedings – Paper 15 (Vidal May 2, 2023)

Interference estoppel - 37 C.F.R. § 41.127(a)(1)

Zynga Inc. v. IGT, IPR2022-00199

Decision granting Director Review and affirming decision on institution – Paper 17 (Vidal August 22, 2022)

Motion to exclude

Weber, Inc. v. Provisur Technologies, Inc., IPR2022-00599

Decision vacating Final Written Decision and remanding for further proceedings – Paper 74 (Vidal November 29, 2023)

Multiple proceedings - 35 U.S.C. § 325(d)

Nokia of America Corporation v. Alexander Soto and Walter Soto, IPR2023-00680, IPR2023-00681 & IPR2023-00682

Decision vacating decision on institution and remanding for further proceedings – Paper 18 (Vidal March 28, 2024)

Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022-00021

Decision vacating decision denying institution and remanding for further proceedings – Paper 11 (Vidal February 24, 2023)

Google LLC v. Valtrus Innovations Ltd., IPR2022-01197

Decision ordering rehearing, vacating decision on institution, and remanding for further proceedings – Paper 12 (Vidal March 29, 2023)

Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421

Decision vacating decision denying institution and remanding for further proceedings – Paper 14 (Vidal August 24, 2023)

Wolfspeed, Inc., v. The Trustees of Purdue University, IPR2022-00761

Decision ordering rehearing, vacating decision denying institution, and remanding for further proceedings – Paper 13 (Vidal March 30, 2023)

Obviousness - 35 U.S.C. § 103

Secondary considerations

Prime Time Toys LLC v. Spin Master, Inc., IPR2023-01339, IPR2023-01348, IPR2023-01461

Decision reversing decision denying institution, and remanding for further proceedings – Paper 12 (Vidal July 9, 2024)

Nearmap US, Inc. v. Eagle View Technologies, Inc., IPR2022-00734

Decision vacating Final Written Decision and remanding for further proceedings – Paper 43 (Vidal February 20, 2024)

Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00733

Order granting Director Review, vacating Final Written Decision, and remanding for further proceedings – Paper 95 (Hirshfeld November 18, 2021)

Rationales

Prime Time Toys LLC v. Spin Master, Inc., IPR2023-01339, IPR2023-01348, IPR2023-01461

Decision reversing decision denying institution, and remanding for further proceedings – Paper 12 (Vidal July 9, 2024)

Priority

Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., IPR2020-00349

Order granting Director Review, vacating Final Written Decision, and remanding for further proceedings – Paper 57 (Hirshfeld November 1, 2021)

Specification and claim requirements - 35 U.S.C. § 112

Multiple dependent claims

Nested Bean, Inc. v. Big Beings USA Pty Ltd, IPR2020-01234

Decision granting rehearing and modifying Final Written Decision – Paper 42 (Vidal February 24, 2023) (precedential)

Written description

Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc., PGR2021-00088 & PGR2022-00025

Decision vacating decision denying institution and remanding for further proceedings – PGR2022-00025, Paper 15 (Vidal August 4, 2023)
Decision vacating decision denying institution and remanding for further proceedings – PGR2021-00088, Paper 16 (Vidal August 4, 2023)

For more information on the Director Review process, visit the Revised Interim Director Review Process page.